Mr Jeremy Drew

Jeremy Drew

Updates

Company & Commercial

Reggae Reggae Sauce: entrepreneur escapes liability for breach of confidence
United Kingdom | 23 January 2012

Levi Roots - otherwise known as Keith Graham, and famed for his appearance on the BBC programme Dragon's Den - has won his High Court battle in relation to his Reggae Reggae Sauce, but at the cost of revealing that the sauce is not based on a secret family recipe. The judge dismissed both the claimants' claim for breach of confidence and breach of contract.

Rare win for respondent at Companies Names Tribunal
United Kingdom | 16 August 2010

Since December 2008 there have been over 100 adjudications before the Companies Names Tribunal, all of which - until now - have been in favour of the applicant. A recent case demonstrates that where a similar name is adopted by a company for genuine reasons, that company's rights can be protected.

Intellectual Property

House of Fraser held to account by Jack Wills
United Kingdom | 27 June 2016

In the final chapter of the successful trademark infringement proceedings brought by Jack Wills Ltd against House of Fraser (Stores) Ltd, the High Court assessed the profits that the defendant retailer had to pay Jack Wills. The decision provides a useful explanation of the factors to be considered when undertaking an account of profits.

Supreme Court sends Trunki packing for good
United Kingdom | 04 April 2016

In the latest instalment of the ongoing saga involving the 'Trunki' suitcase, the Supreme Court has unanimously dismissed the appeal filed by Magmatic. This means that the Court of Appeal judgment stands, which held that PMS's 'Kiddee Case' did not infringe the registered design rights in Magmatic's Trunki case because the "overall impression" of the two products was sufficiently different.

'Supreme' caution required when applying double identity rule
United Kingdom | 13 April 2015

A recent High Court decision not only demonstrates the difficulty for trademark owners in enforcing descriptive trademarks (and the risk that those trademarks may be found invalid), but also highlights potential pitfalls where trademarks coexist within the same market. Also of interest is the judge's criticism of the Court of Appeal decision in Interflora with regard to the burden of proof for 'double identity' cases.

High Court warns not to delay when requesting a stay
United Kingdom | 26 August 2014

In proceedings in which the defendants had already been found liable for passing off and trademark infringement in respect of the BETTY BOOP trademarks, the High Court has rejected the defendants' application to have the remaining copyright infringement and trademark invalidity proceedings stayed in favour of earlier, related Italian proceedings.

Catch the pigeon: Jack Wills clips House of Fraser's wings in trademark dispute
United Kingdom | 17 March 2014

Well-known retail brand Jack Wills has successfully relied on its Community trademark of a pheasant in infringement proceedings against House of Fraser's use of a pigeon logo. The case is a useful reminder of how the conceptual similarities between marks, despite obvious visual differences, can lead to a finding of infringement.

Groundless threats: time for reform?
United Kingdom | 02 December 2013

Existing legislation provides for protection against groundless threats in respect of IP infringement brought by a rights holder against a competitor. However, the relevant provisions have caused problems in practice and many consider reform to be overdue. Such reform was the subject of a recent Law Commission consultation, which also considered whether an unfair competition law may have a role to play going forward.

Cadbury's purple, Scrabble's tile: mark distinctiveness not enough
United Kingdom | 04 November 2013

The Court of Appeal recently issued judgment in Cadbury's drawn-out battle to maintain its trademark registration for the colour purple, as well as ruling on the distinctiveness of Scrabble's tile mark. The decisions act as a useful reminder to brand owners and trademark agents seeking to register unconventional trademarks such as colours, sounds and smells to proceed cautiously when crafting a description of marks.

BSkyB on cloud nine as court finds that Microsoft's SkyDrive infringes its marks
United Kingdom | 19 August 2013

The High Court has ruled in favour of British Sky Broadcasting (BSkyB) following a trademark dispute with Microsoft over Microsoft's SkyDrive online storage facility. The judge held that Microsoft's use of 'SkyDrive' in relation to cloud storage services infringed BSkyB's trademarks and further amounted to passing off. In reaching this decision, the judge relied heavily on the evidence of actual confusion submitted by BSkyB.

Surveying the landscape: admissibility of survey evidence in trademark disputes
United Kingdom | 21 January 2013

The Court of Appeal has issued its much-anticipated decision on the admissibility of survey evidence in the long-running trademark dispute between Marks & Spencer and Interflora. The court's decision not only clarifies the issue of admissibility of survey evidence, but also provides clear procedural guidance on seeking permission to adduce such evidence.

Galaxy wars: Samsung strikes back
United Kingdom | 26 November 2012

The Court of Appeal has resolutely upheld the High Court decision of non-infringement in Apple's proceedings against Samsung concerning Samsung's Galaxy tablet computers. In doing so, it provided the first substantive EU decision on the Apple and Samsung saga. Apple's attempt to alter the High Court's publicity order further highlights that such orders should not be taken lightly.

Supreme Court upholds Oracle's first marketing rights in Europe
United Kingdom | 13 August 2012

The Supreme Court has unequivocally upheld the rights of a trademark owner to the first marketing rights of its products in the European Economic Area, notwithstanding complaints from a parallel importer that the exercise of those rights was anti-competitive. The decision will no doubt be welcomed by trademark owners that continue to benefit from the unambiguous legal protection afforded by the EU Trademarks Directive.

Blocking orders: courts look to ISPs in fight against online infringement
United Kingdom | 25 June 2012

IP rights owners have often found it difficult to take action against online infringers; however, internet service providers may present a much more attractive target and are not opposed to helping the fight against online infringement in the right circumstances. Recent cases have considered the court's powers to grant blocking orders against online infringement of copyright and registered trademarks.

File sharing and copyright infringement: Pirate Bay in the High Court
United Kingdom | 23 April 2012

The High Court has ruled that users and operators of the peer-to-peer file-sharing website The Pirate Bay infringe the copyright of owners of content available through the website. The ruling was made at a preliminary stage in the content owners' application for an order that the court require various English internet service providers to block access to the website.

Copyright's sting in the tail: after the football rights judgment, who really wins?
United Kingdom | 10 October 2011

The Court of Justice of the European Union has issued its judgment on the legality of the Football Association Premier League licensing agreements for the broadcast of live matches. Most commentators have hailed it as a victory for publicans looking for an alternative to a commercial BSkyB subscription. However, the court's findings on copyright may lead to the FAPL prevailing on the judicial equivalent of the away goals rule.

ECJ judgment in Interflora: keyword advertisers beware
United Kingdom | 03 October 2011

The European Court of Justice has delivered its judgment in Interflora v Marks & Spencer plc. The ruling appears to be a victory for trademark owners that wish to restrict the use of their brands as keywords. The court has set out at least three grounds of attack: prejudice to the guarantee of origin, prejudice to the so-called 'investment function' and "riding on the coat-tails" of the registered mark.

Trademark infringer gets no change out of MONEY SAVING EXPERT
United Kingdom | 26 September 2011

Martin Lewis, a columnist and media commentator on personal finance, has won a High Court ruling that his trademark MONEY SAVING EXPERT is a distinctive, protectable mark. The case shows the importance of having a clear brand protection strategy and documenting the use of trademarks, brand names and consumer responses.

'User principle' damages in trademark cases
United Kingdom | 28 February 2011

In a recent trademark case the Patents County Court assessed damages on the 'user principle', in the same way as in patent cases. Under this principle, the claimant need not establish that it has lost sales - damages can be assessed by reference to the amount that the defendant would have had to pay in licence fees if the right to use the trademark had been lawfully acquired.

L'Oréal v eBay: advocate general opines on High Court referral
United Kingdom | 31 January 2011

Considering questions referred by the High Court, the advocate general of the European Court of Justice has opined that online marketplace operator eBay can become liable for its users' actions. According to the opinion, eBay could become liable in cases where it knows that its users are selling infringing goods and the infringing activity is likely to continue in future by the same users regarding the same or similar goods.

Jimi Hendrix clarifies the purple haze of the Enforcement Directive
United Kingdom | 25 October 2010

In one of the first examples of a reported damages assessment under the EU IP Enforcement Directive, the High Court has applied the principles set out in the directive to assess the damages payable by the publishers of The Sunday Times following an infringement of copyright in respect of a Jimi Hendrix concert.

Competition law arguments and unlawful parallel trade: worthy of a defence?
United Kingdom | 06 September 2010

A number of traders importing products from outside the European Economic Area without the rights holders' consent have raised competition law defences in response to trademark infringement actions, arguing that the claimants are acting anti-competitively in enforcing their rights. A recent Court of Appeal decision suggests that such defences may require fuller consideration, potentially by the European Court of Justice.

Direct Line Wins the Day over Wheels Trademark
United Kingdom | 22 October 2007

Direct Line has won the backing of the High Court in its two-year trademark battle with arch-rival esure. The court found that even if a trademark does not confuse the public into thinking that two distinct companies are economically related, a court will still refuse an application for a similar or identical mark which takes advantage of or is detrimental to an existing registered mark.

Mr Miss World Case: Humorous Use of Trademark Not an Automatic Excuse
United Kingdom | 30 July 2007

The decision of a judge to grant an injunction applied for by Miss World Ltd against Channel 4 Television Corporation to prevent the latter from broadcasting a television show entitled Mr Miss World offers support to trademark holders in the protection of their intellectual property, even if the infringement is a light-hearted pun or considered in some way a parody or social satire.

Owner of BLACKBERRY Trademark Secures Domain Name
United Kingdom | 05 March 2007

A decision in favour of the owner of the BLACKBERRY trademark, which had challenged a retailer's use of the domain name 'blackberryworld.co.uk', should encourage brand owners in their attempts to recover domain names which include their trademarks in anything other than a purely descriptive sense.

Cause of Action and Issue Estoppel in Trademark Disputes
United Kingdom | 18 September 2006

In determining a number of preliminary issues in a trademark infringement action, the High Court found that cosmetics group L'Oréal was precluded from using arguments in defending or counterclaiming which it had raised in earlier and separate opposition proceedings relating to the claimant's registration of a trademark. A defence based on anticipatory non-use was also struck out.

Court of Appeal Follows ECJ in 'Genuine Use' Trademark Case
United Kingdom | 05 September 2005

A recent Court of Appeal case involved a claim to revoke a registered trademark for non-use. It focused on the question of what amount and kind of use constitutes 'genuine use' in light of the interpretation of the EU Trademark Directive by the European Court of Justice. The court found that no clear quantitative or qualitative test can determine whether a proprietor's actions amount to genuine use.

Patent Construction and Unregistered Design Right
United Kingdom | 30 August 2005

A recent Court of Appeal decision focuses on the law of patent construction in light of the judgment of the House of Lords in Kirin Amgen and its examination of the wider context of a patent claim. The case also raises important questions about unregistered design rights and the limits of the protection offered by such a right.

Database Rights Frozen Out?
United Kingdom | 01 August 2005

The UK Court of Appeal recently issued what may well be the final decision in the long-running dispute between the British Horse-Racing Board and William Hill. The Court of Appeal has fully accepted and implemented the somewhat controversial findings of the European Court of Justice, which impose significant restrictions on the scope of the sui generis database right.

Passing-Off Claim Passed Over
United Kingdom | 03 May 2005

In Phones 4u Limited v Phone4u.co.uk Internet Limited the High Court handed down a robust decision as to when claimants may rely on passing off as a cause of action. The court held that the claimants had not established sufficient goodwill as at the relevant date to found an action for passing off.

Patently Clearer
United Kingdom | 07 February 2005

In two landmark decisions delivered towards the end of 2004, the House of Lords significantly clarified the interpretation of two key features of UK patent law. In particular, Lord Hoffmann, who delivered the leading opinions in each case, considered how the invention a patent seeks to protect should be understood, as well as the scope of that protection.

Tech, Data, Telecoms & Media

IT consultants beware: take-or-pay clauses may be unenforceable penalties
United Kingdom | 18 December 2012

The High Court recently found that a take-or-pay clause requiring the defendant to take a "minimum" 500 days of consultancy did not constitute an unenforceable penalty; rather, it considered the clause commercially justifiable. Nonetheless, the judge accepted that, in principle, such a clause could constitute a penalty. However, it is unfortunate that he did not expand on why any test of commercial justifiability should apply.

Blocking orders: courts look to ISPs in fight against online infringement
United Kingdom | 26 June 2012

IP rights owners have often found it difficult to take action against online infringers; however, internet service providers may present a much more attractive target and are not opposed to helping the fight against online infringement in the right circumstances. Recent cases have considered the court's powers to grant blocking orders against online infringement of copyright and registered trademarks.

Copyright's sting in the tail: after the football rights judgment, who really wins?
United Kingdom | 13 October 2011

The Court of Justice of the European Union has issued its judgment on the legality of the Football Association Premier League (FAPL) licensing agreements for the broadcast of live matches. Most commentators have hailed it as a victory for publicans looking for an alternative to a commercial BSkyB subscription. However, the court's findings on copyright may lead to the FAPL prevailing on the judicial equivalent of the away goals rule.

HMRC poised to tackle sporting image rights
United Kingdom | 27 January 2011

Image rights are big business, in some cases doubling an athlete's earning capacity. However, Her Majesty's Revenue and Customs is understood to be concerned that some sports clubs may be disguising salary as rights payments in order to reduce the tax burden for their players and the club itself. A challenge to rights arrangements could seriously affect cash-strapped football, rugby and cricket clubs in particular.